WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nintendo of America Inc. v. Alex Jones
Case No. D2000-0998
1. Introduction
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Administrative Panel consisting of a single member was appointed on October 3, 2000 by WIPO.
2. The Parties
The Complainant in this administrative proceeding is Nintendo of America Inc., (Nintendo), a Washington corporation having a place of business at 4820 150th Avenue NE, Redmond, Washington, 98052, United States of America.
The Respondent in this Administrative Proceeding is Mr. Alex Jones, whose address is 23 Fitzroy Road, London, NW1 8TP, United Kingdom.
3. The Domain Name and Registrar
The domain name at issue is:
It is registered with: CORE Internet Council of Registrars, World Trade Center II, 19, Route de Pre-Bois, CH-1215 Geneva, Switzerland.
4. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the "Center") received the complaint on August 10, 2000 by email and on August 11, 2000 in hard copy. An Acknowledgement of Receipt dated August 15, 2000, was sent by the WIPO Center to the Complainants. On August 18, 2000 the Center sent a request addressed to the Complainant regarding an amendment to the Complaint. The amendment to the Complaint was received on August 18, 2000 by email and on August 21, 2000 by hardcopy. The WIPO Center dispatched to the Registrar a Request for a Registrar Verification on August 25, 2000 and a Reply from the Registrar was received on the same day. On August 28, 2000, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the Center formally commenced this proceeding. A Response was received on September 14, 2000 by email and by hardcopy on September 18, 2000. The Center Acknowledged Receipt of the Response on September 15, 2000. The Center dispatched the Notification of Appointment of Administrative Panel and Projected Decision Date on October 3, 2000.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
The Complainant accepted the Administrative Panel�s invitation to file a reply and on application, the Respondent was permitted to respond to the reply. As a result of these additional pleadings, the time for delivering a decision to WIPO was extended to November 17, 2000.
5. Jurisdiction
By registering the subject domain names with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
6. Factual Background
Complainant markets video game systems. It has sold more than one billion video games. One of the Complainants most successful video games is the LEGEND OF ZELDA® series, which has sold over 12 million copies. Over the past 14 years five LEGEND OF ZELDA® games have been released (United States release dates in parentheses): The Legend of Zelda (1987); The Adventure of Link (1988); Legend of Zelda: A Link to the Past (1992); Link's Awakening (1993, 1998 � Game Boy Colour version); The Legend of Zelda: Ocarina of Time (1998).
While already released in Japan, the release in United States and Europe of the next game in the series, The Legend of Zelda: Majora's Mask, is scheduled for the autumn of 2000. The LEGEND OF ZELDA® games have been made for each of Nintendo's game playing devices, including the Nintendo Entertainment System (NES), Super NES (SNES), Nintendo64 (N64) and Game Boy.
The Complainant is the owner of the THE LEGEND OF ZELDA® trademark (U.S. Registration No. 1,494,363 � June 28, 1998) and has a registered trademark for LEGEND OF ZELDA® in the United Kingdom (Registration No. 1,293,419 � November 21, 1986), the Respondent's country of residence.
ZELDA® or THE LEGEND OF ZELDA® are registered trademarks in the following other countries: Australia, Benelux (economic union of Belgium, Luxembourg and Netherlands), France, Germany, Italy, Japan, New Zealand, Spain and Taiwan.
The Complainant has registered trademarks for various LEGEND OF ZELDA® related names including LEGEND OF ZELDA A LINK TO THE PAST (U.S. No. 1,174,389 � December 22, 1992) and THE LEGEND OF ZELDA: OCARINA OF TIME® (U.S. No. 2,279,985 � September 21, 1999); Applications for LEGEND OF ZELDA® related trademarks are pending in many countries including Argentina, Brazil, Canada, China, Czech Republic, Hungary, Ireland, Mexico, Panama, Paraguay, Poland and Turkey.
The Complainant registered the official LEGEND OF ZELDA® Web site for Nintendo64 systems at WWW.ZELDA64.COM, with Network Solutions, Inc. ("NSI") on July 27, 1998. It also registered the domain name ZELDA.COM on March 31, 2000. Both of these domain names point to the same Web site, developed and maintained by the Complainant.
The Respondent registered the domain name, , with F, a CORE authorized registrar, on November 23, 1999. Respondent uses his domain name to operate a Web site.
7. Parties� Contentions
A. Complainant
Under a heading "The Registrant's Domain Name Is Confusingly Similar to the Nintendo's LEGEND OF ZELDA® Trademark", The Complainant says that it owns the registered and famous LEGEND OF ZELDA® trademark and that the Respondent's domain name, is identical to the Complaint's trademark. It then asserts that "It is well established that a user of a mark �may not avoid likelihood of confusion by appropriating another's entire mark and adding descriptive or non-distinct matter to it�" and that "in weighing the likelihood of confusion between two marks the court weighs similarities more heavily than differences. It concludes contending that "As a result, it is clear that is confusingly similar to Complainant's trademark LEGEND OF ZELDA".
It is contended by the Complainant that the Respondent has not made a legitimate non-commercial or fair use of the subject domain name. It notes that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or service marks or to apply for, register, or use any domain name incorporating those marks and says that the Respondent has no trademark or intellectual property rights in any form of the name LEGEND OF ZELDA®.
The Complainant says that the Respondent�s web site has links to commercial Web sites, including links to commercial Web sites that sell LEGEND OF ZELDA® related merchandise. It contends that the Respondent is paid money or its equivalent in the form of discounted or free Web site hosting for each Web user who clicks through to visit any one of the many listed affiliate Web sites. By way of example, the Complainant asserts that a user who clicks on the "Buy Zelda Stuff" area of Respondent's home page automatically is linked to the commercial Web site . The Complainant alleges that the Respondent also receives income from every purchase made as a result of the purchaser linking to the seller through the Respondent's Web site.
Having observed that Respondent's Web site directly links a user to a commercial Web site that hosts the message board and that when displayed, this page contains at least one banner advertisement and is entirely framed within the site the Complainant contends that the Respondent receives income or an equivalent benefit every time an advertisement is viewed or clicked-on.
In addition to asserting that the Respondent has made no legitimate use of the subject domain name, the Complainant says that the Respondent has asserted his own copyright over images owned by the Complainant because right-clicking on all of the Complainant�s copyrighted images on the Respondent's Web page, reveals a dialog box that states that the copyright of the images is owned by "The Gate to the Golden Realm."
Although the site contains a disclaimer, the Complainant says that it is hard to read and short-lived.
The Complainant also points to a number of products made available for downloading by the Respondent.
As to bad faith, the Complainant points to the fact that the Respondent registered the subject domain name after its mark became famous and continued with it after being apprised of the Complainant�s concerns. It also contends that the registration of the subject domain name prevents the Complainant from reflecting its mark in a corresponding domain name, that the Respondent seeks to disrupt the Complainant�s business and that the Respondent is attempting to attract Internet users to himself for commercial gain. It also is contended that the Respondent�s site is a location for the acquisition of illegal software.
B. Respondent
The Respondent says that he is a 15 year old boy who registered the subject domain name for the purpose of developing a fan site for The Legend of Zelda game. It is not disputed that the subject domain name is similar to the Complainant�s mark. The Respondent says that: "The similar name was used in order to maximise the opportunity to contact other fans". He does not deny or challenge the Complainant�s rights to its mark, but says that his use of the subject domain name benefits the Complainant.
The Respondent also contends that the subject domain name is not confusingly similar because it is used in conjunction with a fan site and no user would think that it was dealing directly with the Complainant.
Denying the allegation that he has not made a legitimate non-commercial use of the site, the Respondent says that it is used solely as a fan location and that he has gained no economic or other benefit from it. Any links to commercial outlets are at arms-length and benefit the Complainant through the potential for additional sale of its products.
The Respondent states that its "�legitimate interest in the domain name is as a non profit-making fan."
In answer to the Complainant�s assertion that the Respondent displays material concerning games not yet released in the United States and Europe, the Respondent admits that he does display images from various such games, but that he obtained these images from another "gaming" fan site and displays them as a type of advanced publicity.
The Respondent denies that he has asserted his own copy-right over the Complainants property and says that he did not intend to interfere with the Complainant�s property and merely wanted to assert that the design of his web page was his own.
The disclaimer is apparent and appropriate in the eyes of the Respondent.
As to illegal products, the Respondent notes his young age and enthusiasm, states that the product is out-of-date and, in any event, has been deleted from the web-site.
Concerning the allegation of bad faith, the Respondent denies all elements alleged against him and emphasizes his position that the domain name was registered and is used for a fan site only.
C. Positions in Reply
The Complainant relies on the Administrative Panel�s decision in Daimler Chrysler Corp. v. Brad Bargman, D2000-0222 (WIPO, May 22, 2000) to support the proposition that using a domain name as a fan, does not make it a legitimate use. The Respondent questions whether the case stands for that proposition, noting that in that case "�the site was put up for general auction by the Respondent and then offered for $10,000 to the Complainant and where the Respondent�s web-site caused confusion because it �touts itself as the Official Home Page for VIPER�".
The Complainant also refers to Monty and Pat Roberts, Inc. v. Bill Keith, D2000-0299, (WIPO, June 9, 2000) for the proposition that "�the right to express one's views is not the same as the right to use another's name to identify one's self as the source of those views" to which the Respondent replies he "�is not Zelda; Zelda is a game character; Nintendo are not Zelda; Zelda is a game character developed by Nintendo; the Respondent does not pass himself off as a game character or as its owner; he could not acknowledge Nintendo any more clearly than he actually does."
Referring to Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020, (WIPO, March 14, 2000), the Complainant says that "it is irrelevant whether a Web site extols or criticizes a particular trademark. The key is whether the domain name accurately reflects the content of the site so that it will not either intentionally or unintentionally divert Internet traffic searching for the Complainant's Web site."
Reference also is made to cases which deal with sites at which there are connections to commercial outlets. The Respondent emphasizes that insofar as his site does this, it is to the benefit of the Complainant and not to him.
8. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
i) a domain name is identical or confusingly similar to a service mark to which the Complainant has rights;
ii) the Respondent has no legitimate interest in respect of the domain name;
iii) the domain name has been registered or is being used in bad faith.
Although the jurisprudence of domestic courts is instructive and can provide guidance for the consideration of an Administrative Panel, it must be recognized that the mandate of an Administrative Panel is not to resolve substantive issues of intellectual property rights. The focus of the inquiry is narrow.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent�s documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent�s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
Paragraph 4(c) also provides non-conclusive guidance as to what may constitute a Respondent�s legitimate interest in a domain name. One is of relevance to this proceeding: "the domain name holder is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant appears to advance its case asserting that the subject domain name is confusingly similar, but begins its contention by stating that the subject domain name is identical to its mark.
These allegations require different analyses. If a domain name were identical one of the requirements of paragraph 4(a)(i) would be met. If not, it would be necessary for an Administrative Panel to consider whether it is not just similar, but "confusingly similar". In an appropriate case consideration would have to be given to whether the analytical test is based on the words used alone- confusing on a plain reading - or in context - in the actual circumstances of the case. Relevant to the latter approach would be the text of the disclaimer which in this case is:
"This website is not the official Zelda Website nor is it affiliated to or endorsed by Nintendo�If you would like to visit the official Nintendo site click here or if you would to visit the official Zelda site click here."
The Respondent does not challenge the Complainant�s rights to its mark and concedes that the subject domain name is similar to the Complainant�s mark.
Previous Administrative Panels have held that "�the addition of� �.com��does not affect the domain name for the purpose of determining whether it is identical or confusing. (see: Vertical Solutions Management, Inc. v webnet-marketing, inc., FA0006000095095 (National Arbitration Forum, July 31, 2000) referring to Rollerblade, Inc. v Chris McGrady, D2000-0429 (WIPO, June 25, 2000)
In the opinion of the Administrative Panel, the subject domain name is virtually identical to the Complainant�s mark. This Panel and other Administrative Panels have concluded that such a finding leads to the conclusion that a domain name and mark are identical. (see: E. & J. Gallo Winery v Hanna Law Firm, D2000-0615 (WIPO, August 3, 2000) and Estate of Tupac Shakur v Shakur Info Page, AF-0346, (eResolution, September 28, 2000)
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondent�s Legitimate Interest
A number of cases have considered "fan club" situations, but most have had other elements present which affected the analysis and result. (For example: Daimler Chrysler Corp. v. Brad Bargman - commercial use; Experience Hendriz, L.L.C. vs. Denny Hammerton and The Jimi Hendrix Fan Club, D2000-0364 (WIPO, August 15, 2000) - selling; Hero Honda Motors Limited vs. Rao Tella, D2000-0365 (WIPO July 16, 2000) - failure to organize the fan club; Monty and Pat Roberts, Inc. v. Bill Keith D2000-0299 (WIPO June 13, 2000) - indirectly offering products for sale.
The Complainant relies on Compagnie de Saint Gobain v. Com-Union Corp. which was distinguished in Bridgestone Firestone, Inc. vs. Jack Myers, D2000-0190 (WIPO, July 6, 2000). The latter case upheld the registration of a domain name which was used for criticism of the Complainant.
The narrow issue engaged in this case is whether a non-commercial and good intentioned use make it "legitimate".
A case on point is The Estate of Tupac Shakur vs. R.J. Barranco, AF-0348a and b (eResolution October 23, 2000) The tribunal upheld the use of a domain name for fan-club purposes saying:
"The position of the Claimant�would effectively prohibit any fan club from being established on the Internet if it mentioned in the site name an artist�s name, where part or all of that name related to a registered mark or even perhaps transgressed claims of common law rights in a name. It would also permit persons in the position of this Claimant to unjustly enrich themselves by confiscating the work of fans and admirers in establishing a web site supporting their favorite artists without any opportunity for compensation."
With respect, this Administrative Panel does not agree.
The circumstances noted in paragraph 4(c) are not exhaustive. A fan-club situation creates its own unique situation. In concluding that the Respondent�s use of the subject domain name is not legitimate, the Administrative Panel takes into account a number of factors.
Whether the use is to criticize or praise may have relevance to the fairness of the use, but in the negative context this has been seen to engage issues of free speech. Notions of the limits to free speech are not uniform among jurisdictions. Consideration of the issue may require the application of conflict of law rules and an interpretation of domestic law that this case does not engage.
It is apparent that the Respondent is not critical of the Complainant or its products. That fact does not answer the question.
A Complainant has the right to decide how its mark will be used in the context of the product or products associated with the mark. A fan-club does not exist in a vacuum; it promotes the product for which it is named. It may, and in this case does, lead people to commercial outlets for the product. Insofar as a domain name which is identical to a name or mark is used solely in the context of the product of the owner of the name or mark and the owner objects to the use, it is not legitimate. The Complainant has the right to decide how its mark will be used in the promotion of its product. Although the Respondent may have a genuine desire to support the Complainant�s products, he does not have a legitimate interest in the subject domain name which is identical to the Complainant�s mark
Different considerations may arise in circumstances where the domain name is similar, but not identical or where the use of identical words is coupled with the identification of a fan club. Neither these issues nor the question whether considerations of free speech intervene in circumstances where the use is for critical purposes are matters resolved by this Administrative Panel.
The Complainant has met the requirements of paragraph 4(b).
C. Bad Faith
The Respondent has made no effort to sell the subject domain name.
Although the Complainant says that the registration of the subject domain name prevents it from "�reflecting [its] mark in a corresponding domain name", there is no evidence that the Respondent has engaged in a pattern of such conduct as required by the Policy.
The evidence does not support a finding that the Respondent seeks to disrupt the business of the Complainant. In fact, the opposite appears to be true.
The evidence is clear that the Respondent has not sought commercial gain. Although his website contains links to commercial outlets, he states that he derives no personal gain.
The circumstances in the Policy from which evidence of bad faith can be inferred are not present. Taking the evidence as a whole, there is no other basis on which the Administrative Panel could find bad faith.
D. Comment
This case has been hotly and ably contested and the parties are thanked for the assistance they provided to the Administrative Panel.
It is not the function of an ICANN Administrative Panel to resolve all issues concerning the use of intellectual property rights. Matters beyond the narrow purview of the Policy are for the courts of appropriate jurisdictions.
If circumstances giving rise to evidence of bad faith were to develop, the Complainant may consider whether it would wish to initiate another proceeding. Whether another Administrative Panel could or should entertain the matter is for it to decide at the appropriate time.
9. Decision
On the basis of the findings and conclusions made and reached by the Administrative Panel, this Compliant is dismissed.
The Panel so orders.
Edward C. Chiasson, Q.C.
Sole Panelist
Dated: November 17, 2000.
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